Obviousness Versus Obviousness-Type Double Patenting

In Prometheus Laboratories, Inc. v. Roxane Laboratories, Inc., the Federal Circuit affirmed the district court’s finding that Prometheus’ claims were invalid as obvious, but in so doing it cited its own precedent regarding obviousness-type double patenting. Is the court blurring the line between these doctrines?  Continue reading this entry

Federal Circuit Interprets Two Important Infringement Provisions

In a single decision issued for companion cases Momenta Pharmaceuticals, Inc. v. Teva Pharmaceuticals USA Inc. and Momenta Pharmaceuticals, Inc. v Amphastar Pharmaceuticals, Inc., the Federal Circuit interpreted two important sections of the infringement statute, 35 USC § 271. In one portion of its decision, the court adopted a literal interpretation of § 271(g), holding that the statute only applies if the accused product was synthesized by a patented process. In another portion of its decision, the court decided that the post-manufacture testing at issue constituted “routine” post-approval activities that were not protected by the safe harbor of  § 271(e)(1). In so doing, the court backpedaled from its 2012 decision in Momenta Pharmaceuticals, Inc. v. Amphastar Pharmaceuticals, Inc., where it held that Amphastar’s activities were “anything but routine.”  Continue reading this entry

Federal Circuit To Revisit On Sale Bar Triggered By Contract Manufacture

Friday the 13th may have been The Medicines Company’s lucky day, since the Federal Circuit granted its petition for rehearing en banc in The Medicines Company v. Hospria, Inc. In  the court’s original decision, which I discussed in this article, the court found that the use of a contract manufacturer gave rise to an on sale bar under 35 USC § 102(b) that invalidated two Orange Book-listed patents for Angiomax® (bivalirudin).  Continue reading this entry

USPTO Proposes New IDS Framework

Tucked into the USPTO’s proposed patent fee changes is a proposal to change the Information Disclosure Statement (IDS) framework. While applicants may welcome the simplified procedures for obtaining consideration of an IDS, they may have to adjust their patent budgets to account for new IDS fees, especially if they pursue corresponding foreign applications that might generate additional references to be submitted.  Continue reading this entry

USPTO Plans To Hike Patent Fees

The USPTO has published proposed changes to patent fees that it says will “slightly” increase patent prosecution fees–even though several common fees will increase by 10% to 25%. The proposed changes to the Information Disclosure Statement (IDS) fees reflect a planned restructuring of the IDS rules that could benefit applicants, but the other changes seem to simply require applicants to pay higher fees for the promise of enhanced patent examination quality and improved patent examination efficiency. The USPTO hopes to implement the new fees before January 20, 2017, when a new administration will take office.  Continue reading this entry